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Sunday, 23 August 2009

Every so often the IPKat receives a piece of email which, he suspects, was not primarily addressed to him. One such item is a circular email received from Gaurav Goel, a Registered Patent Agent in the United States. The circular reads as follows:

"PLEASE WRITE TO YOUR CONGRESSIONAL REPRESENTATIVES! [The IPKat wishes he had some. Fictional felines sadly are unrepresented in even the most generous of democracies ...] SEND THIS FORM LETTER ABOUT ILLEGAL OUTSOURCING OF PATENT APPLICATIONS!

Re: Blatent Disregard or Violation of U.S. Commerce and Trade Regulations by Outsourcing of Patent Applications

Dear Congressman / Congresswoman / Rep. / Sen. ____________________:

I am writing to seek your legislative initiative to stop the unlawful export of subject matter of U.S. patent applications being prepared abroad for filing in the U.S.A.

Exporting subject matter for the purposes of filing a U.S. patent application requires a clearance from the Bureau of Industry and Security at the U.S. Department of Commerce. Judging from the activity evident just on one website, LinkedIn.com, either the U.S. government is allowing a massive number of U.S. patent disclosures to be sent abroad for preparation, or this is being done without the appropriate government clearances [If nothing else, this shows the effectiveness of LinkedIn as a means of enabling professionals to send work to each other].

If the former is true, then this suggests the U.S. government is undermining our own national interests [Doesn't this depend on how "national interests" are defined? Is getting the filing of US patents done quickly and cheaply not itself in the "national interest"?]. If the latter is true, it suggests that many patent owners are exporting subject matter in violation of U.S. commerce and trade policies, while trying to gain advantage of those very same commerce policies, i.e., patent protection, here in the U.S.A. [This isn't so clear, is it? When is an invention a "US invention", in the case of, for example, the innovative product of more than one country, or of a multinational corporation, or where it is the result of 'open innovation'?] The activity evident on the website LinkedIn.com alone suggests this is being done on a massive scale. There is even a Linkedin group called Outsourcing of Legal Services[at the time of posting, this group had 508 members], with a very strong representation of foreign patent workers preparing U.S. applications and correspondence to the U.S.P.T.O.

Should America tolerate this kind of activity, in blatant disregard of our U.S. trade regulations? [presumably, whether 'America' tolerates it, 'Americans' are tolerating it already]

With respect, I say it should not. I, and many other professionals, including members of the patent bar, believe that allowing this kind of outsourcing to continue is both foolish and dangerous, and could never be in our national interest [This sounds like a very broad claim made against a tradititionally conservative and cautious profession].

In fact, I plead with you to propose legislation making the outsourcing of U.S. patent subject matter a statutory violation of U.S. laws. [The need for such legislation presupposes that such conduct is not currently a violation of US laws] I further believe that the U.S.P.T.O. will strongly support such a legislative proposal, which is likely to have strong bipartisan support. [Is there anything to suggest that the engaging and talented David Kappos is a protectionist?] In this time of economic crisis, this legislation will prevent the bleeding of billions of dollars of professional services from being illegally outsourced to foreign countries [The IPKat can almost hear the murmuring of thousands of patent professionals outside the US that they wouldn't mind getting their hands on some of those bleeding millions, as recompense for the fine mess that the US-precipitated world economic crisis has got them all into -- but that's another story].

Thank you very much for all the hard work you do for us every single day. You are greatly appreciated".

The IPKat would dearly like to know more about this in terms of the governing US law, also taking into account the economic and moral arguments for and against the outsourcing. Please feel free to post your comments below.

15 comments:

Anonymous
said...

Your comments are cute, but the laws regarding export of innovation are pretty clear. The USPTO has pointed this out about a year ago: http://www.thefreelibrary.com/USPTO+Warns+Applicants+Of+Outsourcing+Patent+Application+Preparation.-a0185049578

I found a useful blog post which discusses the question. There do appear to be laws against doing this some of the time but there are plenty of people who seem to think it can be done if the proper care is taken. My own reaction is to think how deliciously contrary to the principle of free trade this is.

Hmm, it strikes me that, as the USPTO in its present form is totally and completely hopeless, if not actually downright dishonest, and as the quality of US representation seems helpless against it, one might as well get it done cheaply.

The irony here is that his name Gaurav Goel suggest he is of Indian origin and knows Hindi!! Does he draft Hindi patent applications too? (reverse outsourcing I must say). Just that he crossed the other side of the fence doesn't warrant such strong criticism.

If America is tolerant on immigration then I think outsourcing can be tolerated too.

My first reaction is to tell this fellow to take a valium or ten. His comments are, frankly, incoherent. US export restrictions already exist, and their violation can result in criminal penalties ($$ and/or incarceration); why does he want a new law? To whom would that new law be directed - to foreigners? Lots of luck with that one, pal. The Federal Circuit just restricted the scope of applicability of 271(f), which is a foreign-looking section of the statute.

US export restrictions ostensibly are about national security, but in reality they're simply protectionist restraints on trade, in contravention of the US' obligations under GATT. There's no reason in principle why someone in the USA who's developed a new pharmaceutical active ingredient should have to pay what US-based pracitioners charge for preparing and prosecuting patent applications, if he can find someone located outside the USA who he feels can do as good a job for less money. But according to existing export restrictions, that's what he has to, unless he first gets clearance to have the application prepared outside the USA.

Interestingly, the US export restrictions, as I understand them, also preclude a US patent attorney from taking his laptop abroad, if that laptop contains invention disclosures from clients and patent applications that haven't yet been filed or received a foreign filing license. I wonder if Mr. Goel is clamoring for enforcement of that aspect of the statute as well.

The ones who really get hit with this are foreign-based, US-licensed practitioners like myself, who may have difficulty getting work from US-based clients because of these antiquated and overreaching export restrictions. (That I can offer US filing services to my local clientele without fear of the US export restrictions, since in those situations I'm not dealing with US-originated material, is of small consolation.)

I think I'll send a letter around telling people to write their congressmen (and women) asking them to *jettison* the export restrictions.

If Mr. Goel wants to get upset about something, he should ask why the USPTO demands that US citizens be licensed by the USPTO to practice patent prosecution before the USPTO, but allows foreigners who aren't admitted to the USPTO to do the same. See www.iliplaw.com for more info on that one.

My previous employer sent quite some inventions abroad for patent drafting. Because that was cheaper. And because the US patent system is "unique" in the world - in the sense that the vast majority of patent systems is in the end based on the German patent system, either directly or via the EPC. So for broad territorial protection, you'd rather hire a versatile (European?) patent attorney than a US one.

Of course, you should abide with US export regulations. Organise yourself an Export Control Officer who checks each and every invention that goes out and there is nothing illegal.

This letter seems more like a pathetic outcry for protection of the US market for patent attorneys who cannot compete with price, quality or both of their colleagues elsewhere in the world.

And of course, I know quite some US Patent Attorneys/Patent Agents who do not need such protective measures because they deliver splendid work.

The sender of the posted message did not intend for publication of this content and has respectfully requested IPKats to remove the posting. IPKats did not ask for approval or inform the sender of the intended publication. Furthermore, the opinions expressed therein do not reflect the opinion of sender's employer.

The sender of the posted message did not intend for publication of this content and has respectfully requested IPKats to remove the posting. IPKats did not ask for approval or inform the sender of the intended publication. Furthermore, the opinions expressed therein do not reflect the opinion of sender's employer.

Ya..lets give this guy a break... the economic crisis has taken a toll on him. If that's not all maybe his firm will now.

While I am leery of most mass emails, I believe there is some credence to the legal arguments posed in the “Outsourcing” circular email you received (although I believe there may be better ways to initiate change than an internet petition, but that is another discussion).

There is a broad body of law and many federal regulations in the US that governs the export of sensitive knowledge, services and products. For the sake of brevity and the fact that I should not comment on law that is outside of my domain, I will confine my comments to patent law in the States.

All U.S. patent applications are reviewed for security purposes and for export provisions by the Dept of Commerce and other agencies upon initial filing. For the purposes of filing abroad, there is 35 USC 184 (et. seq.) that requires one to obtain a foreign filing license prior to filing a patent application in a foreign country.

This handy link below (to the MPEP) points to some of the salient points in the export of technical data as it pertains to US patent law:

http://www.uspto.gov/web/offices/pac/mpep/documents/0100_140.htm

It would appear that the outsourcing patent application preparation would undermine the intention of these provisions that were put in place to inhibit the export of sensitive technologies. You are correct in pointing out that such conduct would already be prohibited by law, but I believe that the additional provisions exist in the patent statutes to prevent the public or patent practitioners from presupposing the sensitivity of new inventions and technology. The U.S. government wishes to evaluate the scope of all inventions to determine the impact to national security that may not be apparent to the uninitiated.

The USPTO notice of 23.7.2008 states that a license to export subject matter abroad is meant to allow foreign filings. For "applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the US sohould contact" the Dept of Commerce for the appropriate clearance.

It is not forbidden to outsource preparation: it may be forbidden to do so without clearance.

It remains to be seen whether or not there is a legal basis for this requirement: can the DoC lawfully impose such a requirement seen that the preparation abroad of a patent application that will be filed in the US constitutes does not technically constitute export?

Finally, the moaning about quality control seems to me a bit silly and self-serving. US patent attorneys still retain a monopoly on representation before the USPTO. I cannot see the USPTO admitting to practice before it some nice chap or gal from Bangalore any time soon, no matter how competent (s)he may be!

I am a service provider based in India, and Mr. Goel mailed me last week, which said:

"Did your U.S. clients sending you patent applications indicate their BIS clearance for exporting the subject matter for U.S. filings?

Thanks! Gaurav "

I was initially confused regarding the purpose of the mail, as I do not even know this crazy guy.

So, I refrained from replying to such a mail from an unknown guy, and after reading this post, it seems he was trying to gather some kind of evidence to attach it with his letter to CONGRESSIONAL REPRESENTATIVES!

Well, if that is the case, I think he has gone way too far in debating this issue. Even if there are concerns, I think professionals on either side of the wall are trying their best to solve them so that it is mutually beneficial.

I am also wondering that this chap has so much of time for first drafting separate letters for US Patent Attorneys, and foreign vendors, and then mass mailing those !!!

Is his employer paying him while he is doing all this online mailing tricks??

If yes, I wish I get a similar employer, with God's grace, so that I can also do something extra, though more fruitful and sensible !!!!

Actually the phrase has an interesting origin - it was graffiti recorded by Nigel Rees in his book "Graffiti Rules OK".

I wonder how this falls within the copyright law, considering its originator was breaking the law (defacing public property) when he or she shared his or her gem with the world. I assume it is in the public domain, since the creator is untraceable.

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